DESIGN RIGHT AND REGISTERED DESIGN

Thermos instigated proceedings against Aladdin for infringement of its registered design. The design had been registered in 1992 in respect of a container primarily in the form of a flask. The design consisted of five drawings and was accompanied by a statement of novelty. The flask had a main body and a top. The main body had bands and a handle. The handle was of I-beam construction spreading out to merge with the bands. The top was made up of a cylinder split in two to form two cups, with a truncated cone mounted on top. Aladdin's case on infringement was that the design of its flask was so different to that shown in the registered design that there was no infringement. The High Court held that the design of the defendant's flask was substantially different from the registered design, with the result that there was no infringement. The court rejected an attack by the defendants on the validity of the registered design. The claimant appealed on the issue of infringement.

The Court of Appeal held that the issue for the High Court on the question of infringement was one of mixed fact and law, in that it required the judge to apply a legal standard to the facts. As previous case law showed, the Court of Appeal should not interfere with the finding of the lower court on such a matter unless the judge had mis-directed himself or otherwise erred in principle. In the present case, the judge had not misdirected himself in comparing the features of the designs in terms of their function and appeal to the eye. He had not merely compared the two designs side-by-side but had applied a 'now and later' test of what major design features a consumer would remember.

Accordingly, the judge had adopted the correct approach and, in any event, the Court of Appeal would itself have come to the same conclusion that the differences in the two designs meant that they were not substantially the same, whether considered side by side or after an interval.

"Intellectual Property Newsletter" July 2001